Is the System Broken? Identifying Good and Bad Behaviors In Licensing – LAIPLA Spring Seminar - PowerPoint PPT Presentation

Is the System Broken? Identifying Good and Bad Behaviors In Licensing – LAIPLA Spring Seminar. Jay P. Kesan , Ph.D., J.D. Professor, University of Illinois at Urbana-Champaign; Patent Attorney; Entrepreneur. Phil Hartstein President at Finjan.

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Is the System Broken? Identifying Good and Bad Behaviors In Licensing – LAIPLA Spring Seminar

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At the University of Illinois, Professor Kesan is appointed in the College of Law, the Institute of Genomic Biology, the Department of Electrical & Computer Engineering, the Information Trust Institute, the Coordinated Science Laboratory, the College of Business, and the Department of Agricultural & Consumer Economics.

He directs the Program in Intellectual Property & Technology Law at the College of Law. At the Institute of Genomic Biology (IGB), he is group leader of the Business, Economics & Law of Genomic Biology (BioBEL) theme, and he directs research on biofuel law & regulation at the Energy Biosciences Institute (EBI).

Professor Kesan continues to be professionally active in the areas of patent litigation and technology entrepreneurship. He was appointed by federal judges to serve as a special master in patent litigations, and has served as a technical and legal expert and/or counsel in patent matters. He also serves on the boards of directors/advisors of start-up technology companies.

Phil Hartstein is President of Finjan Holdings Inc.. He oversees the direction and management of current assets and future investments and works directly with the executive management team and Board.

Phil has worked in a number of technology and intellectual property related roles the past 15 years. He started with a boutique IP law firm, worked as IP counsel for a VC funded startup, spent time in IP consulting and IP brokerage firms, and prior to joining Finjan, spent four years bringing both private and public market capital, expertise, and credibility in licensing and enforcing patent rights on behalf of owners.

Phil holds a BS in industrial technology from California Polytechnic, San Luis Obispo. He is a regular speaker and participant in industry and trade organizations, and is a named inventor and patent holder with more than two dozen pending and issued patents across a number of disciplines.

Michael Kallus began his career as a judicial clerk for the Honorable Chief Judge C. Roger Vinson in the US District Court for the Northern District of Florida. He went on to private practice with Fish & Richardson’s Boston office and later as a founding member of Confluence Law Partners, focusing on the defense, development and strategic employment of his clients’ intellectual property assets. Prior to RPX, Mr. Kallus litigated complex patent issues in federal courts throughout the US and the ITC, negotiated lucrative technology licenses, reviewed IP portions of billion-dollar mergers and acquisitions, and advised businesses in capitalizing on their intellectual property.

Mr. Kallus is a graduate of the University of Virginia School of Law and the University of California, Berkeley. He is a member of the state bars of California and Massachusetts

Mr. Rosmann joined the company in October 2011 as Senior Vice President. He was appointed to Executive Vice President in May 2014.

Mr. Rosmann began his legal career as an attorney with Irell & Manella LLP in the High Technology/intellectual Property Group, where he represented Broadcom on I.P. and litigation matters as an outside attorney from 1996 - 2000. Most recently he was Vice President, Intellectual Property Litigation at Broadcom Corporation from 2000 - 2010.

Mr. Rosmann holds a B.S., Engineering Science and Mechanics/Biomedical Engineering from Iowa State University, a Master of Science Electrical Engineering from the University of Southern California and a J.D. degree from Loyola Law School, Los Angeles.

“Patent infringement litigation by patent monetization entities has risen dramatically over a remarkably short period of time. One of the most striking results is that in 2012, litigation by patent monetization entities represented a majority of the patent litigation filed in the United States.

Invest in, protect and support the broad dissemination of technological advancements, which in turn create rewards for investments in innovation and job creation.

Preserve our integrity by consistently being honest, truthful, and transparent in our actions.

Show leadership and commitment as credible advocates of IP rights standing up as trustworthy experts in our industry.

Build strong relationships through strong communications.

Best Practices

Ensure focused licensing and enforcement programs pursuing the provider of the patented technology and not its customers, consumers or end users.

Conduct reasonable diligence to determine a patent’s enforceability and use with respect to prospective licensees, and make that information available to them.

Respect procedural rights and judicial efficiency in the courts and in the prosecution and protection of IP behind the innovation.

Be transparent with the intent in each discussion, and articulate the cause and effect scenarios which would prompt a shift in communication and an escalation of each discussion.

Provide useful facts to prospective licensees and defendants to foster productive business discussions early and often to aid in informed decision-making.

Offer fair value licenses or settlements based on legitimate factors and considerations.

Commit to keeping lines of communications open between the patent owner and prospective licensee to preserve a path for the parties to find an amicable solution or resolution for their respective businesses.

“Patent licensing may be the only major industry without a code of conduct or standards of ethical behavior.” ~Marshall Phelps

Reforms are focused on categorizing patent owners, should be redirected to behaviors

Return the focus to the merits of each case and managing resources judiciously

To be credible you have to build an infrastructure to deliver on these commitments

Through these – or other – best practices, we are working to restore credibility to the licensing industry. First, in leading by example and from there advocating for a return to an efficient marketplace.

We are one year into our renewed licensing campaign and have several enforcement actions. We are seeing a positive response from the industry, less contentious negotiations, and over time we expect decreased timeline.